We often have clients who want to register words that have a known descriptive meaning or connotation to a portion of the public. Foreign words are a common example of this in a multicultural society like Australia. The decision clearly articulates the approach to the registration of such words as trade marks, where a word may have meaning for some parts of the community but not others.

Facts

This case concerned ORO – the Italian word for “gold” – and CINQUE STELLE – Italian for “five star”. Cantarella registered each as a trade mark in 2000 and 2001 respectively, in relation to coffee and coffee products. Between 2000 and 2011 Cantarella sold approximately 3,982,485 kilograms of its “Vittoria Cinque Stelle” and “Vittoria Oro” brands. That’s 568.93 million cups of coffee.

Modena Trading Pty Ltd (Modena) imports coffee products into Australia supplied by Italian company, Caffe Molinari SpA, including “Caffe Molinari Oro” and “Molinari Cinque Stelle”. The words ORO and CINQUE STELLE featured on the packaging of the Molinari products and were used to market the products in Australia.

Cantarella originally sued Modena in the Federal Court of Australia for infringement of its trade marks. Modena cross-claimed seeking cancellation of Cantarella’s registrations for those marks.

Cantarella’s claim was initially upheld. Whilst the trial judge considered the words “gold” and “five stars” would not have been distinctive in English, their Italian equivalents were not so widely understood so as to render the marks incapable of distinguishing Cantarella’s products from those of other traders.

Modena appealed the decision.

On appeal, the Full Court considered it relevant whether or not other coffee traders would want to use the words ORO or CINQUE STELLE in relation to their products. A secondary consideration was what potential consumers might understand of the marks as that may influence whether traders are likely to want to use them.

Bean there done that

For a trade mark to be valid, it must be capable of distinguishing the goods or services of the applicant from those of other traders. The first question is whether the trade mark is inherently adapted to so distinguish the applicant’s goods or services. Purely descriptive terms have long been held to lack the necessary degree of inherent distinctiveness in order to function as a trade mark.

The Court referred to the general principle stated in the case of Clark Equipment Co v Registrar for Trade Marks (1964) 111 CLR 511, in which the High Court held that whether a trade mark is inherently adapted to distinguish depends on the likelihood that other traders might want to use the trade mark without any improper motive in relation to similar goods or services. The Court held that this meant consideration needed to be given primarily to the traders in the particular goods or services.

In the case of foreign words, as was the case here, it did not matter that the trade mark was not commonly understood by the public at large. The context of the particular goods in this case was that coffee products in Australia commonly originated from Italy and that Cantarella used the words ORO and CINQUE STELLE in their known sense to signify the high quality of their coffee products.

Similarly, in F.H. Faulding & Co Limited v Imperial Chemical Industries of Australia and New Zealand Limited (1964) 112 CLR 537, the High Court considered the understanding of the words “Barrier Cream” in the context of a multi- purpose skin protectant cream made by manufacturing chemists. The High Court did not enquire as to the general public’s knowledge of the product, but instead relied on relevant trade journals and pharmacopoeia to determine the “ordinary signification” of the words “Barrier Cream” and whether any trader would want to use those words.

In the present case, the Court also considered it important that other coffee traders in Australia have used the words ORO and CINQUE STELLE in the known sense to describe the quality of their products since well before Cantarella registered its marks. The fact that the words had been used that way in the past indicated that other traders would wish to use those words in the future.

Non parlo Italiano

The Full Court noted that, in 2001, Italian was the second most utilised language in Australia, not taking into account those Australians with some knowledge of Italian. However, it held that it was not necessary that consumers know what the words mean in English.

Their Honours identified the “enormous growth in the pure coffee and café culture” in Australia, which culture was often and predominantly associated with Italy. In that context, the Full Court considered it appropriate to consider what consumers of the relevant good or service understood of the trade mark, and considered it “obvious to use Italian words to describe the quality of a coffee blend.”

Ironically, back in 2007, Cantarella had opposed Sunbeam Corp Ltd (Sunbeam)’s registration of the Italian word GELATARIA (meaning “ice cream parlour”). In that instance, the delegate for the Registrar found that the term “gelataria” was descriptive of the purpose of commercial or industrial ice cream making machines, but not of the domestic machines in respect of which Sunbeam used the mark. Therefore, Sunbeam was only permitted to register the mark for use in respect of domestic products. Importantly, the case considered the particular way in which the relevant trade mark was used by Sunbeam.

I’ll have that to go: take-away lessons

Some of the key things to note from the case include:

  • The considerations of this case apply to any word that might have a particular meaning to a portion of the community, not just foreign words;
  • The primary consideration will be what other traders understand the word to mean;
  • The context in which the goods or services are provided will be relevant – for example where a good or service has a special affinity with a particular country or region.

In an increasingly multicultural Australia, and within a market more and more desirous of sophisticated goods, businesses should not assume that a foreign word can be registered as a trade mark merely because its meaning is not known to the general public.

It is important to consider how other traders in similar goods or services might understand the trade mark in the context of the particular goods or services. Piper Alderman can advise your business as to how to protect its valuable trade marks though registration and challenge the registration by competitors of trade marks that do not have the necessary degree of distinctiveness.